The Supreme Court’s ground-breaking decision in Cox Communications, Inc. v. Sony Music Entertainment delivered a seismic shock to the landscape of copyright enforcement in the United States.
The plaintiffs initially sued Cox for vicarious infringement and contributory infringement in the Eastern District of Virginia. There, the plaintiffs alleged that Cox was in violation of the Digital Millennium Copyright Act’s (DMCA) safe harbor provision for internet service providers (ISPs) because it ignored hundreds of thousands of notices of infringement that were sent on behalf of publishers, and awarded $1 billion in damages. (Yes. “Billion.”) The Fourth Circuit reversed the district court’s finding of vicarious infringement but affirmed that Cox was liable for contributory infringement against Sony Music and other publishers because Cox knew, or was willfully ignorant, of infringing conduct. Cox appealed and the Supreme Court granted certiorari.
The safe harbor provision of the DMCA shields ISPs from infringement lawsuits, but only if there is a scheme in place to notify and/or punish individual infringers – up to and including termination of the accounts of repeated offenders.
Justice Thomas began the decision for the majority by noting that the Copyright Act does not expressly render any party liable for infringement that is committed by a third party. Relying entirely on Sony Corp. of America v. Universal City Studios, Inc. (“Betamax”) and MGM Studios, Inc. v. Grokster, Ltd. (“Grokster”), the majority found Cox had not engaged in either contributory or vicarious infringement for two reasons:
- Like the Betamax recording machine, which provided for “time-shifting” — taping a broadcast to view at a different time — as well as infringing uses, like recording television shows, Cox’s ISP services provide for non-infringing uses.
- Cox did not actively encourage users’ infringement. In contrast, the defendant in Grokster not only paid for higher-ranked search results for queries searching for “Napster” or “free music,” but also offered direct technical support for finding and downloading copyrighted materials online.
In a concurring opinion, Justice Sotomayor offered different reasons for coming to the same conclusion as the majority, and Justice Jackson joined in her opinion. She argued that the majority’s reasoning unnecessarily limited secondary liability while ignoring the possibility of holding ISPs liable under an aiding-and-abetting common law scheme. There was nothing in the statute, Betamax, or Grokster that indicated the court should not consider the intent of a party that is potentially liable for the infringing conduct of a third party. In fact, Justice Sotomayor noted two recent Supreme Court decisions in which aiding and abetting was applied as a means of finding liability: Smith & Wesson v. Mexico and Twitter v. Taamneh.
In Smith & Wesson, Mexico claimed the gun manufacturer was a willing participant in supplying weapons to drug cartels in Mexico. The Supreme Court found that Smith & Wesson was not liable because the company did not intend to sell the arms to the cartels, drawing a distinction between indifference and intent. Similarly, Cox was not liable for secondary infringement without evidence of pervasive, systemic, and culpable assistance — even under a common law scheme of aiding and abetting.
Sotomayor went on to lament that the majority seemed to have contradicted the intent of Congress by effectively making the DMCA’s safe harbor provision meaningless. Calling it a hard-fought compromise between providers and publishers, Sotomayor pointed out that years of work put into legislating the safe harbor provision were essentially wasted.
As a result of this decision, it is unclear whether ISPs and other companies that have taken steps to take down infringing music, photos, movies, and other works in response to DMCA takedown notices will continue to assist content owners in that way — or whether they will stop incurring the expense of helping to enforce copyright law, because the safe harbor is now as wide as the ocean.
